2016 (1) TMI 759 - SC - Indian Laws

Rectification of register where trademark BLENDERS PRIDE was registered by inadvertence/error - time for filing notice of opposition within the three month - power of the Registrar to correct his own mistakes under Section 57(4) of the Act - interpretation of Section 125 - Held that - A perusal of this letter shows that the notice of opposition was taken on record. This could not have been done unless time had been extended by one month, as the said notice of opposition was filed only on 19.1.2004, i.e. within the 30 days period after three months were over on 6.1.2004. Though Section 131 of the Act refers to the Registrar s satisfaction and refers to conditions which he may think fit to impose, it is clear that he need not pass a separate order in every case if he wishes to extend the time. It is true that time to file a notice of opposition is to be done within the time that is expressly provided in Section 21(1) and that Section 131 of the Act would not therefore apply. However, Section 131 is a pointer to the fact that the extension of time by the Registrar is a ministerial act for which no hearing is required. It is thus clear that time has been extended by the Registrar, as is evidenced by the letter dated 16.2.2004. Therefore, it is clear that any registration certificate granted prior to the 30 days extended period from 6.1.2004 would be violative of Section 23(1) of the Act. In this view of the matter, the Appellate Board and the Division Bench are clearly right in declaring that the registration certificate, having been issued on 13.1.2004, would be violative of Section 23(1)(a), and the register would have to be rectified by deleting the said trademark therefrom. In paragraph 10 of the plaint, there is a specific averment by the plaintiffs that upon necessary inquiries being made, the plaintiffs have learnt that the defendants have not even applied for registration of the trademark BLENDERS PRIDE in their favour. It may also be noticed that the suit is both a suit for infringement as well as passing off, and it is significant that Austin Nichols has not been made a party defendant to the said suit. Also, the very issue as to validity of the registration of the trademark concerned has to be determined in the application for rectification of the register, which would obviously bind only the parties to the suit and nobody else. For these reasons, the application for rectification, not having been made by any of the party defendants in the said suit for infringement and passing off, Section 125(1) would have no application. Division Bench of the High Court is also correct in reasoning that Section 125(1) would only apply to applications for rectification of the register, and not to the exercise of suo motu powers of the Registrar under Section 57(4). The reason is not hard to seek. If the Registrar is barred from undertaking a suo motu exercise under Section 57(4) to maintain the purity of the register, there could conceivably be cases where a defendant, after raising the plea of invalidity in a suit for infringement, chooses not to proceed with the filing of a rectification petition before the Appellate Board - The Registrar s power to maintain the purity of the register of trademarks would still remain intact even in such cases, as has been held by the judgment in Hardie s case. The Division Bench judgment requires no interference. - Decided against the appellants.

Summary

Issues Involved:
1. Validity of the trademark registration of 'BLENDERS PRIDE'.
2. Jurisdiction of the Registrar of Trade Marks.
3. Applicability of Section 125 of the Trade Marks Act, 1999.
4. Interpretation of Section 57(4) of the Trade Marks Act, 1999.

Detailed Analysis:

1. Validity of the Trademark Registration of 'BLENDERS PRIDE':
The respondent No.4, a U.S. corporation and ultimate subsidiary of Pernord Ricard S.A., claimed to have coined and adopted the trademark 'BLENDERS PRIDE' in 1973. The trademark was extensively marketed and sold worldwide, including India. Respondent No.4 applied for registration of the trademark in various countries, including India. The appellant's application for registration of an identical trademark was advertised, and respondent No.4 filed for an extension to oppose this registration. Despite the opposition, the trademark was erroneously registered to the appellant. The Registrar later issued a show cause notice for rectification, acknowledging the error. The Appellate Board and Division Bench found the registration invalid as it violated Section 23(1) of the Trade Marks Act, 1999, because the opposition period had not expired when the registration was granted.

2. Jurisdiction of the Registrar of Trade Marks:
The appellant argued that the show cause notice issued by the Registrar from Bombay was without jurisdiction since the application and subsequent proceedings were in Delhi. The court clarified that under Section 57(4), the suo motu power can only be exercised by the Registrar himself, whose registered office is in Bombay. Therefore, the show cause notice was within jurisdiction.

3. Applicability of Section 125 of the Trade Marks Act, 1999:
The appellant contended that Section 125 should apply, barring the Registrar from rectification proceedings since a written statement questioning the trademark's validity was filed in an infringement suit. The court clarified that Section 125 applies only to applications for rectification by parties to the suit. Since the rectification application was not made by any party defendant in the infringement suit, Section 125 did not apply. The court emphasized that Section 125 pertains to applications for rectification of the register, not to the Registrar's suo motu powers under Section 57(4).

4. Interpretation of Section 57(4) of the Trade Marks Act, 1999:
The court explained that Section 57(4) allows the Registrar to rectify the register to maintain its purity, independent of any application for rectification. This power is essential to prevent errors from remaining on the register, which could occur if a defendant in an infringement suit does not pursue rectification. The court upheld the Division Bench's interpretation that Section 125 does not bar the Registrar's suo motu powers under Section 57(4).

Conclusion:
The court dismissed the appeal, affirming the Division Bench's judgment that the registration of the trademark 'BLENDERS PRIDE' was invalid and the register should be rectified. The Registrar's jurisdiction and suo motu powers under Section 57(4) were upheld, and Section 125 was found inapplicable to the case at hand. No costs were awarded.